The Complainant is Ford Motor Company, United States of America, represented by Phillips, Ryther & Winchester, United States of America.
The Respondent is xiang cheng, China.
The disputed domain name <fordkauai.com> (the “Domain Name”) is registered with Xin Net Technology Corp. (the “Registrar”).
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2019. On June 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 26, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On June 26, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request in the Complaint that English be the language of the proceeding on June 30, 2019. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on July 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2019.
The Center appointed Karen Fong as the sole panelist in this matter on July 30, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant was founded under the name Ford Motor Company in 1903 and is one of the global automotive industry leader. The Complainant manufactures or distributes automobiles in 200 markets across 6 continents, with approximately 196,000 employees and 100 plants worldwide. The Complainant uses the FORD name in connection with its goods and services. FORD is among the best-known and highly-regarded trade marks in the world and the Complainant has continuously used FORD in connection with automobiles and automobile parts and accessories since 1895 in the United States of America and is now known in many places around the world, including in China.
In 2018, the year in which the Domain Name was registered by the Respondent, FORD was ranked in Interbrand’s annual survey of the “100 Most Valuable Global Brands” as the 35th most valuable brand in the world. The Complainant has obtained many registrations in the United States of America and worldwide for FORD. The earliest registration submitted in evidence dates back to 1909 (the “Trade Mark”).
New and certified used FORD automobiles are sold through a network of Ford dealers, which are authorized by the Complainant to conduct business under names that include the Trade Mark, as specified in their dealer agreements. Dealers often use names comprised of “Ford” and the business or family name of the dealer operating the dealership or a name indicative of the geographic area in which the dealership is located.
Kauai is the fourth largest of the main Hawaiian Islands. A Ford dealership located in Lihue, the second largest city on the island, services the island. The dealership uses the name Kuhio Ford and the domain name <fordkauai.net>, which was registered on November 6, 2008. A prior Ford dealership, Midpac Auto Center, used the Domain Name as its official dealership website from November 9, 1999, until the summer of 2012, when it was cancelled.
The Respondent who appears to be based in China registered the Domain Name on January 2, 2018. On or about March 2019, the Domain Name was connected to a website displaying lottery results and advertisements for female escorts (the “Website”). Prior to that the Website was used to display information regarding zodiac signs and constellations. On April 12, 2019, the Complainant’s counsel sent a cease and desist letter to the Respondent. The Respondent did not respond.
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
The Rules, paragraph 11, provide that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” According to the information received from the Registrar, the language of the Registration Agreement for the Domain Names is Chinese.
The Complainant submitted the Complaint in English and requested that this be the language of the proceeding. The Complainant has stated that should the request be denied, it will re-submit the Complaint in Chinese.
In exercising its discretion to use a language other than that of the Registration Agreement, the UDRP Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Respondent has not challenged the Complainant’s request and in fact has failed to file a response. The UDRP Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to trade marks or service marks in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the Trade Mark. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case the Domain Name contains the Complainant’s distinctive Trade Mark in its entirety and the geographical name Kauai. The addition of this term does not prevent a finding of confusing similarity noting the Respondent’s complete integration of the Trade Mark in the Domain Name. E.g., N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org, WIPO Case No. D2011-0260; Oakley, Inc. v. wu bingjie aka bingjie wu / Whois Privacy Protection Service, WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the UDRP Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement.
The Panel finds that the Domain Name is identical or confusingly similar to Trade Marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Domain Name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with relevant evidence of rights or legitimate interests, the UDRP panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant submits that the Respondent is not a Ford dealer or in any way connected or affiliated with the Complainant. The Respondent has not been authorized by the Complainant to make any use of the Trade Mark. The Respondent cannot assert that he was using or had made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. The use of a third party’s trade mark in a domain name in connection with the provision of escort services and other services unrelated to the goods and services in respect of which the Trade Mark has a reputation cannot be considered a bona fide offering of goods or services as it is clearly a case where a Respondent is seeking to unduly profit from the Complainant’s goodwill and reputation.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not provided any reasons why he chose to register a well-known Trade Mark which he has no connection to. The Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when he registered the Domain Name. The Trade Mark is well known and is reproduced in its entirety in the Domain Name. It is implausible that he was unaware of the Complainant when he registered the Domain Name.
In the WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0).
In light of the above, the Panel finds that registration is in bad faith.
The Domain Name is used in bad faith. The Website initially displayed information regarding zodiac signs and constellations. It then displayed lottery results and advertisements for female escorts. The Respondent was clearly seeking to benefit from the Complainant’s reputation and goodwill to attract traffic to the Website for commercial gain. Using the Domain Name to intentionally attract for commercial gain, Internet users to the Website by creating a likelihood of confusion with the Complainant’s as the source, sponsorship, affiliation or endorsement of the website is bad faith in accordance with paragraph 4(b)(iv) of the Policy.
From the above, the Panel finds that the Respondent has registered and used the Domain Name in bad faith and the Complainant has succeeded in proving the third element.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <fordkauai.com> be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: August 6, 2019